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Generic Top Level Domain Name (gTLD) Decisions |
Kent House Ltd. v. RN, WebReg
Claim Number: FA0403000244527
PARTIES
Complainant
is Kent House Ltd. (“Complainant”),
125 Longslow Road, Market Drayton, Shropshire TF9 3QZ. Respondent is RN, WebReg (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35
Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kenthouse.com>,
registered with Domain Discover.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Hon.
Tyrus R. Atkinson, Jr., David H. Bernstein, Esq. and David P. Miranda, Esq.,
chair as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 10, 2004; the Forum received
a hard copy of the
Complaint on March 11, 2004.
On
March 12, 2004, Domain Discover confirmed by e-mail to the Forum that the
domain name <kenthouse.com> is
registered with Domain Discover and that the Respondent is the current
registrant of the name. Domain Discover
has verified that Respondent is bound by the Domain Discover registration
agreement and has thereby agreed to resolve
domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
March 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 5,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@kenthouse.com by e-mail.
Although
Respondent did submit a timely copy of its Response by email by the Response
deadline of April 5, 2004, Respondent had not
submitted a hard copy of the
Response, as requried by Policy ¶ 5(a).
The
Forum received a timely Additional Submission from Complainant on April 6,
2004.
The
Forum received a timely Additional Submission from Respondent on April 12,
2004.
On April 23, 2004, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Hon.
Tyrus R. Atkinson, Jr., David H. Bernstein, Esq. and David P. Miranda, Esq.,
chair as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name <kenthouse.com>
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Kent House Ltd. (“Complainant”) contends that the domain name <kenthouse.com>
is identical or confusingly similar to Complainant’s company name legally
registered through the registrar of companies for England
and Wales. Complainant submits a Certificate of
Incorporation for Kent House Ltd. dated September 12, 2003. Complainant contends that <kenthouse.com>
is the logical domain name for its business.
Complainant further contends that Respondent has no rights or legitimate
interests in the domain name because Respondent’s business
is the registration
and selling of domain names.
Complainant further contends that Respondent has registered the domain
name for the sole purpose of reselling it to a third party. Complainant submits correspondence showing
that Respondent has tried to sell the domain name for a sum of $3,888.00,
consideration
in excess of Respondent’s out of pocket costs directly related to
the domain name.
B.
Respondent
Respondent
RN. WebReg (“Respondent”) contends that Complainant does not have a registered
trademark for the term “Kent House”.
Respondent contends that it registered the domain name on November 23,
2003 and that Complainant’s company name was not registered
until December 9, 2003. Respondent later admits that Complainant’s
registration of its company name was effective as early as September 12,
2003. Respondent asserts that a
statement of incorporation does not sufficiently establish rights in the mark
under the UDRP. Respondent contends
that Complainant’s mark was registered as a business name until shortly before
Respondent’s registration of the
domain name.
Respondent further contends that Complainant has failed to submit
sufficient proof to establish secondary meaning, prior to Respondent’s
registration of the domain.
Respondent
contends that it did not have knowledge of Complainant’s registered company
name at the time it registered the disputed
domain. Respondent further contends that there is no evidence that
Complainant has common law trademark rights to the term “Kent House” or
that
consumers in the United Kingdom, or the United States, associate Complainant
with the term “Kent House”. Respondent
did not register the domain name for the sole purpose of selling it to the
Complainant, but rather contends that it purchased
the domain name as part of
its business in which it offers domain name registration, web hosting and email
services, as well as paid
advertising for search results. Respondent admits that it also offers its
domain names for sale to the general public.
Finally, Respondent contends that Complainant’s bringing of this case is
“reverse domain name hijacking” because Complainant brought
the Complaint with
knowledge that it has no enforceable trademark rights under the policy.
C.
Additional Submissions
Complainant
in its additional submission contends that it has common law trademark rights
in the term “Kent House” because the company
was incorporated October 12, 2003
and it has been doing business under the name “Kent House” since January
2002. It also had an incorporation for
Kent House Consulting Ltd. in April of 2002.
Complainant has been doing business as Kent House for more than two
years with clients, including The Modernization Agency of the
National Health
Service and the Department of Health.
Complainant has also been advertising its business as
<kenthouseconsulting.co.uk>; <kenthouse.biz>; and
<kenthouse.info>. Complainant
contends that Respondent’s business of obtaining paid advertising search
results, appearing on Respondent’s websites are
insufficient to establish
Respondent’s legitimate interests in the domain. Complainant contends that Respondent should have known of
Complainant’s use of the Kent House name because it had already registered
two
other “Kent House” domains, <kenthouse.biz> and <kenthouse.info.
Respondent
submits an additional submission contending that Complainant has offered no
evidence of substantial consumer association
of the mark with Complainant in
either the United Kingdom or United States.
Respondent also contends that there is no evidence that Respondent knew
of, or should have known of, Complainant’s purported mark
and Respondent did
not conduct a computer search in other domain names containing “Kent House”
prior to its purchase of the disputed
domain.
It also contends that it cannot be expected to do so. Respondent contends that it purchases and
offers for sale domain names that contain common terms and are not subject to
trademarks.
FINDINGS
The panel finds that the domain name <kenthouse.com>
is identical or confusingly similar to Complainant’s business name Kent House
Ltd., but Complainant has failed to establish that
“Kent House” is a trademark
or service mark to which Complainant has rights. Because the panel finds that Complainant has failed to establish
the first required element pursuant to paragraph 4(a) of the policy,
the
request for transfer shall be denied.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant has provided an incorporation
statement to assert that it has rights in the Kent House Ltd. mark. The Kent House name is not registered as a
trademark or service mark by Complainant with any national government or
authority. Complainant fails to set
forth in its Complaint any use of the term Kent House as a trademark or service
mark. In determining whether
Complainant has established common law trademark rights, two of the Panelists
have considered the entire record,
including the Complainant’s supplemental
submission. Because Complainant lacks
any registration of the mark, these Panelists have reviewed the record to
determine whether Complainant
has established common law trademark rights by
demonstrating sufficiently strong identification of its mark by the public,
showing
the mark as acquired secondary meaning. Although a Complainant in a proceeding such as this may establish
common law rights to a mark, the Complainant in this case has failed
to do so. See generally, Tees.com, LLC v. Emphasis
Tech., Inc., FA 20632 (Nat. Arb. Forum Dec. 27, 2003); Razorbox, Inc. v.
Skjodt, FA 150795 (Nat. Arb. Forum
May 9, 2003) (finding that Complainant did not establish the requisite
trademark or common law rights to
grant Complainant the necessary standing for the Panel to find
in its favor as Complainant’s pending trademark application did not, in and
of
itself, demonstrate trademark rights in the mark applied for).
A
statement of incorporation does not sufficiently establish rights in the mark
under the UDRP. Complainant has not
established trademark rights in KENT HOUSE LTD. See Diversified Mortgage, Inc. v. World Fin. Partners, FA
118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that
its “rules are intended only to protect trademarks,
registered or common law,
and not mere trade names, due to the fact that trade names are not universally
protected as are trademarks”);
see also Sampatti.com Ltd. v. Rana, AF-0249 (eResolution July 31, 2000)
(finding “[T]he mere fact of creating and operating a company having as a name
a common word
plus a dot and a TLD suffix does not give to the company itself
the sole right to the word”).
Complainant
has not sufficiently established secondary meaning in its mark. Absent evidence that establishes that
relevant consumers think Complainant is the source or origin of the KENT HOUSE
LTD mark, Complainant
has not established secondary meaning. See Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284
(eResolution Sept. 9, 2000) (finding
that marks classified as descriptive cannot be protected unless secondary
meaning is proven and to establish secondary meaning
Complainant must show that
the public identifies the source of the product rather than the product
itself); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat.
Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark
rights at common law because it did
not prove the CYBERIMPRINTS.COM mark was
used to identify the source or sponsorship of goods or services or that there
was strong
customer identification of the mark as indicating the source of such
goods or services).
In sum, these two Panelists found that
Complainant failed to present sufficient evidence of trademark or service mark
rights to the
domain name at issue and thus has not satisfied its burden under
the first factor.
The third Panelist also finds that
Complainant has not satisfied its burden under this first factor, but for
somewhat different reasons. This
Panelist has refused to consider Complainant’s effort in its supplemental
submission to show common law rights in the KENT HOUSE
trademark. Rather, this Panelist believes that a
showing of trademark rights should have been included in the initial Complaint,
and that supplemental
submissions should only be accepted if they are rebutting
defenses that could not reasonably have been anticipated, or to bring new
facts
or precedent to the Panel’s attention. Elec.
Commerce Media v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 1, 2000); Pacific
Fence & Wire Co. v. Pacific Fence,
D2001-0237 (WIPO June 11, 2001).
Because the initial Complaint had no allegations at all to support a
finding of trademark rights, the third Panelist finds that Complainant
has
failed to satisfy its burden of proving that it has trademark rights in the
KENT HOUSE mark.
In conclusion, the Panel unanimously
agrees that Complainant has failed to present sufficient evidence of trademark
or service mark
rights to the domain name at issue, and thus that Complainant
cannot satisfy its burden under the first factor of the Policy.
Since the Panel has determined that
Complainant did not meet its burden in establishing first element of its claim,
the Panel did
not consider whether Respondent had any rights or legitimate
interests in the domain name.
Since Complainant has failed to meet its
burden with respect to the first element of its claim, the Panel did not
consider whether
there was bad faith registration and use of the domain name.
Respondent has contended that
commencement of this proceeding constitutes “reverse domain name hijacking” on
the part of Complainant. A claim of
reverse domain name hijacking is a serious claim and should not be made without
sufficient proof and support that the initial
Complaint itself was brought in a
bad faith effort to hijack a domain name in which the Complainant lacks
rights. Although, the Panel finds that
Complainant is not entitled to the transfer of the domain name, Complainant
does have trade name rights
in the KENT HOUSE name and appears to have brought
this Complaint in a good faith, albeit mistaken, belief that such rights are
sufficient
to justify transfer under the Policy. Respondent has not provided sufficient proof that Complainant
acted in bad faith in commencing this proceeding.
DECISION
Having
failed to establish the elements required under the ICANN Policy, the Panel
concludes that relief requested by Complainant
shall be DENIED.
David P. Miranda, Esq., Chair
David H. Bernstein, Esq. and Hon. Tyrus R. Atkinson, Jr. Panelists
Dated: May 4, 2004
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